In a notice published in the Federal Register last week (81 Fed. Reg. 93669), the U.S. Patent and Trademark Office announced that the Extended Missing Parts Pilot Program that was implemented on January 8, 2010 would be extended for another year.  The pilot program allows applicants to request a twelve-month extension to pay the search fee, examination fee, any excess claim fees, and surcharge for late submission of the search and examination fees in a nonprovisional application.  The notice indicates that the pilot program benefits applicants by providing additional time to determine if patent protection should be sought and focus on commercialization efforts, benefits the public by adding publications to the prior art, and benefits the Office by removing nonprovisional applications that applicants decline to pursue from its workload.  In last week's notice, the Office noted that while it "has not yet completed its evaluation of the program, the number of participants in the program over the past several years indicates that there may be sufficient benefits to the patent community."  The pilot program has been extended through January 2, 2018.

The Office implemented the Extended Missing Parts Pilot Program six years ago, noting that it would "effectively provide a 12-month extension to the existing 12-month provisional application period, providing applicants additional time to find financial help, evaluate a product's worth in the marketplace or further develop the invention for commercialization" (see "USPTO Implements Pilot Program Extending Provisional Application Period").  The Office initially sought comments regarding the program in April 2010 (see "USPTO Seeks to Effectively Double Provisional Application Period").  Under the pilot program as originally implemented, the Office modified its missing parts practice -- which at the time permitted an applicant to pay the filing fees and submit an executed oath or declaration after the filing of a nonprovisional application within a two-month time period that is extendable for an additional five months on payment of extension of time fees -- such that applicants would file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed (as well as pay the basic filing fee, submit an executed oath or declaration, and not file a nonpublication request) and then be given a 12-month period within which to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination, and any excess claim fees.

Applicants wishing to participate in the pilot program must satisfy the following requirements, which remain unchanged under the extension of the pilot program:

(1) submit a certification and request to participate in the program at the time of filing of a nonprovisional application (preferably using Form PTO/AIA/421);
(2) the application must be an original (not reissue) nonprovisional utility or plant application filed under 35 U.S.C. 111(a);
(3) the nonprovisional application must directly claim the benefit under 35 U.S.C. § 119(e) and 37 C.F.R. § 1.78 of a prior provisional application filed within the previous twelve months, with the specific reference to the provisional application being made in an application data sheet; and
(4) the applicant must not have filed a nonpublication request.

In last week's notice regarding the extension of the pilot program, the Office once again:

[C]autions all applicants that, in order to claim the benefit of a prior provisional application, the statute requires a nonprovisional application filed under 35 U.S.C. 111(a) to be filed within twelve months after the date on which the corresponding provisional application was filed.  See 35 U.S.C. 119(e).  It is essential that applicants understand that the Extended Missing Parts Pilot Program cannot and does not change this statutory requirement.

Since the Extended Missing Parts Pilot Program was originally implemented there have been changes in application filing practice, which the Office addressed in its most recent notice.  For example, in view of the changes in the rules of practice made pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which amends U.S. Patent Law to implement the provisions of the Patent Law Treaty (PLT), the Office notes that an applicant may now file a petition to restore the benefit of a provisional application filed up to fourteen months earlier.  More importantly, the notice indicates that:

[I]f a nonprovisional application is filed outside the 12 month period from the date on which the corresponding provisional application was filed, the nonprovisional application is not eligible for participation in the Extended Missing Parts Pilot Program, even though the applicant may be able to restore the benefit of the provisional application by submitting a petition under 37 CFR 1.78(b).

The latest notice regarding the pilot program also notes that while "an application (other than an application for a design patent) filed on or after December 18, 2013, is not required to include a claim to be entitled to a filing date," under the PLT and PLTIA, and the Office of Patent Application Processing will issue a notice giving the applicant a two-month, extendable time period within which to submit at least one claim in order to avoid abandonment of the application, "[t]he Extended Missing Parts Pilot Program does not change this time period."

The form for requesting participation in the program (PTO/AIA/421) also outlines the PTA effects of participation in the program, stating that:

Any patent term adjustment (PTA) accrued by applicant based on certain administrative delays by the USPTO is offset by a reduction for failing to reply to a notice by the USPTO within three months.  See 37 CFR 1.704(b).  Thus, if applicant replies to a notice to file missing parts more than three months after the mailing date of the notice, the additional time that applicant takes to reply to the notice will be treated as an offset to any positive PTA accrued by the applicant.

In addition, under the pilot program, nonprovisional applications are still published according to the existing eighteen-month publication provisions.  As a result, applications participating in the pilot program still must be in condition for publication.  The notice indicates in order for a nonprovisional application to be in condition for publication, Applicants must have submitted the following: (1) the basic filing fee; (2) the executed inventor's oath or declaration in compliance with 37 CFR 1.63 or an application data sheet containing the information specified in 37 CFR 1.63(b); (3) a specification in compliance with 37 CFR 1.52; (4) an abstract in compliance with 37 CFR 1.72(b); (5) drawings in compliance with 37 CFR 1.84 (if applicable); (6) any application size fee required under 37 CFR 1.16(s); (7) any English translation required by 37 CFR 1.52(d); and (8) a sequence listing in compliance with 37 CFR 1.821–1.825 (if applicable). Applicants must satisfy any compact disc requirements and provide an English translation of any provisional application that was filed in a non-English language.

More importantly, the Office "advises" that:

[T]he extended missing parts period does not affect the twelve-month priority period provided by the Paris Convention for the Protection of Industrial Property (Paris Convention).  Accordingly, any foreign filings must still be made within twelve months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign-filed application or if protection is desired in a country requiring filing within twelve months of the earliest application for which rights are left outstanding in order to be entitled to priority.

In the Office's most recent notice regarding the pilot program, the Office reiterates that applications that are not filed electronically will still be assessed a $400 additional fee (or $200 for small entities) pursuant to the AIA, that this fee will be due within the two-month (extendable) time period to reply to the Notice to File Missing Parts of Nonprovisional Application, and that applicants will not be given the 12-month time period under the pilot program to pay this fee.

For additional information regarding this topic, please see:

• "USPTO Extends Missing Parts Pilot Program Once Again," January 14, 2014
• "USPTO Extends Missing Parts Pilot Program Again," January 10, 2013
• "USPTO's Extended Missing Parts Pilot Program Is Extended," December 22, 2011
• "USPTO Implements Pilot Program Extending Provisional Application Period," December 13, 2010
• "USPTO Seeks to Effectively Double Provisional Application Period," April 4, 2010